There have been a couple of new cases filed in federal court in California alleging that unknown BitTorrent users committed copyright infringement and engaged in civil conspiracy by trading porn files online. [Read about some earlier, ongoing cases of this type here and here]. The court has issued orders that move the process of uncovering the identities of the John Doe defendant BitTorrent users.

Generally a plaintiff cannot start the discovery process in a case until it has had a “Rule 26(f)” conference with the defendant. But when the defendants are anonymous (as they are in these BitTorrent cases — they’re known only by IP address), the plaintiff has a bit of a problem. It needs discovery to find out the names of the defendants, but it cannot take discovery before the Rule 26(f) conference. [More on this]

So in cases like this, a plaintiff will ask the court to allow the early discovery to be had. Courts grant those motions allowing early discovery when good cause has been shown.

In this case, the court allowed the discovery because the following four criteria had been met:

(1) The plaintiffs had identified the Doe defendants with sufficient specificity that the court could determine that the defendants are real people who can be sued in federal court. On this point, the court credited the list of IP addresses associated with each of the unknown defendants.

(2) The plaintiffs recounted the steps taken to locate and identify the defendants. Again, the court looked to the fact that the defendants were known only by IP addresses. The names of the defendants could not be ascertained from the information available.

(3) The plaintiffs demonstrated that the action could withstand a motion to dismiss. In some cases this is a tough hurdle to get over. But in copyright cases the threshold can be met relatively easily — simply alleging ownership of a copyright and unlawful copying satisfies this element.

(4) The plaintiffs proved that the discovery was likely to lead to identifying information that will permit service of process. Getting the subscriber information from the ISPs would allow names to be associated with the IP addresses, for further action to be taken.

So ISPs across the country will be getting peppered with more subpoenas, and sending out letters to their John Doe subscribers, giving deadlines to move to quash the subpoenas. More mad scramble to protect identities is on its way.

One of the craziest things about the copyright infringement lawsuits that have been brought against BitTorrent users accused of trading movies over the internet is the vast number of John Doe defendants that are usually lumped into one case. After the plaintiff copyright owners file a complaint for infringement — sometimes against thousands of anonymous defendants — they ask the court for leave to take expedited discovery. Then the movie companies serve subpoenas on the John Does’ internet service providers, asking the ISPs to disclose the identities of their customers associated with particular IP addresses.

Prosecuting a case against thousands of copyright infringement defendants is an enormous task, both for the plaintiffs’ attorneys as well as the ISPs who must respond to the subpoenas. Having so many defendants risks making the case unmanageable. So one may question whether it is appropriate under the Federal Rules of Civil Procedure to have so many unknown defendants all in the same case. In the nomenclature of civil litigation, the question is whether the joinder of all the defendants in one action is appropriate.

In three of the BitTorrent copyright cases pending in federal court in Washington DC brought by the US Copyright Group on behalf of a handful of independent film makers, groups like the Electronic Frontier Foundation, the ACLU and others argued improper joinder. These organizations filed amicus briefs in the cases of Call of the Wild Movie v. Does 1 – 1,062, Maverick Entertainment v. Does 1 – 4,350, and Donkeyball Movie v. Does 1 – 171, arguing that joining all the defendants in one action violated Rule 20 of the Federal Rules of Civil Procedure. The court rejected these arguments, finding that joinder was proper, at least in such early stages of the litigation where the defendants had not yet been identified.

The court considered three factors when answering the question of proper joinder: (1) whether the claims arose from the same transaction or occurrence or series of transactions or occurrences, (2) whether the legal and factual questions are common to all defendants, (3) and whether joinder would cause prejudice to any party or needless delay.

Same transaction or occurrence

The court observed that claims against joined parties must be “logically related,” and that this is a flexible test, with courts seeking the broadest possible scope of action. The court held that the claims against the BitTorrent users were logically related, based on plaintiffs’ allegations that the BitTorrent protocol makes every downloader of a file also an uploader, and accordingly, every user who has a copy of the infringing file on the network must necessarily be a source of download for that infringing file. This is an interesting finding, in that the strength of plaintiffs’ allegations were based on how BitTorrent works.

Common legal and factual questions

As for this second factor, the court found that the legal and factual questions were common because the parties would be litigating the same copyright claims, and all of the claims related to the use of BitTorrent.

Prejudice or needless delay

The court said some intriguing things about the interests of the parties in making its findings on this factor. For one, it said that leaving all the defendants joined in the same action would benefit them all, in that they would be able to see the defenses that other defendants were making. The court also expressed concern in favor of the efficiencies afforded the plaintiffs in filing these mass lawsuits. The plaintiff movie studios have been criticized for filing suit against large numbers of defendants in one action rather than separate suits against each defendant (and thereby having to pay only one filing fee to start the action versus several thousand filing fees). The court saw this question squarely in favor of plaintiff. It found that forcing plaintiffs to administer multiple actions, and having to pay the filing fees in all those actions “would certainly not be in the ‘interests of convenience and judicial economy,’ or ‘secure the just, speedy and inexpensive determination of the action.'”

Filing of copyright infringement complaint will be precursor to more subpoenas seeking to identify unknown file-sharing defendants.

Another porn company has filed a copyright lawsuit against hundreds of anonymous John Doe defendants who allegedly used the Bittorrent protocol to trade plaintiffs’ copyrighted movies. So ISPs around the country should expect another wave of subpoenas sent to unmask these unknown file sharers. The works allegedly infringed in this case include provocative titles such as “Girlfriend Lost a Bet” and “Iraq Care Package.”

Interestingly, this complaint — unlike the complaints in similar Bittorrent porn copyright cases — contains a paragraph that tries to explain why over a thousand defendants should be joined in one lawsuit:

Joinder is appropriate because, on information and belief, each Defendant was contemporaneously engaged in a coordinated effort with the other Defendants to reproduce and distribute Plaintiff’s copyrighted works to each other and hundreds of third parties via the BitTorrent protocol.

This language appears to be an attempt to head-off arguments like those made by EFF and others in some of the other massive copyright infringement actions against scores of anonymous defendants.

Tanya Andersen has waged a years-long battle against the record companies after she was sued for copyright infringement for trading music files via a peer-to-peer network. She sued the RIAA and several record companies over a number of claims, including one for negligence, saying that the plaintiffs in the copyright case were negligent by “prosecuting sham litigation against” her and by failing to properly investigate the name of a pseudonymous file sharer.

The RIAA defendants moved for summary judgment on the negligence claim. The court granted the motion.

The court held that Oregon law (under which the negligence claim was brought) does not provide for the type of damages Andersen was seeking. She had claimed damages from emotional distress and physical ailments stemming from defendants’ alleged negligence.

Oregon’s “impact rule,” requires a “physical touching” for there to be emotional distress damages in cases like this. In this case, the actions of the plaintiffs that gave rise to Andersen’s alleged harm were the aggressive and otherwise objectionable tactics in pursuing the copyright litigation. Absent evidence of the required physical impact, her negligence claim failed.

Well this is interesting. One of the bittorrent copyright defendants who has been victimized targeted by the law firm of Dunlap, Grubb & Weaver, a/k/a the US Copyright Group, has filed a class action lawsuit against the law firm. The complaint [download], filed yesterday (November 24), is 96 pages long, includes 456 paragraphs of allegations, and contains 25 claims for relief. The claims include extortion under the Hobbs Act, common law extortion, conspiracy, violation of the Computer Fraud and Abuse Act, and a slew of fraud claims. Mounting a defense to this gargantuan effort is certainly going to cut into the profit margin that the US Copyright Group should expect from its dubious business model.

Happy Thanksgiving. I’m grateful for your continued support and interest in Internet Cases. It truly is a pleasure to write these posts and to get your feedback and engagement. And it’s also a pleasure to bring you news of this ultra-timely new copyright lawsuit.

Greenberg Smoked Turkeys, as you might expect, sells turkeys. Since 1987 it has distributed these turkeys with some simple instructions, comprised of three short paragraphs. You can read these instructions which are embedded in the complaint. It posted these instructions on its website in 2003.

Some time thereafter, Greenberg alleges, its turkey selling competitor copied the instructions and began using the instructions on its own website. Thus this lawsuit.

Infringement claims over instructions can be a tricky endeavor. In copyright law, there’s something called the “merger doctrine.” This relates to the idea-expression dichotomy: ideas are not copyrightable but their expression is. Simple instructions or directions may not pass this threshold: in their simplicity, they may be expressing something in the only possible way. That kind of expression does not rise to the level of copyrightability.

Objection 1: Firesheep claims that its purpose is to demonstrate security vulnerabilities and is not intended for nefarious purposes. Would not what it does be illegal otherwise? If it complained about others using its code for similar purposes, would that not illustrate that its objective is other than educational and at that point it would then be breaking the law?

Objection 2: Firesheep has put its code out there and others should be able to use it as they see fit, especially to protect themselves from how the Firesheep code may be used. Further, all Blacksheep does is provide the tool. It is the individuals using it who are the infringers. Blacksheep should be left out of the equation.

On the contrary, if by “leveraging” Firesheep’s code, Blacksheep causes a copy of the Firesheep code to be made, this copying, if unauthorized by Firesheep, would seem to constitue an infringement.

I answer that, Blacksheep markets its product for the very purpose of combatting Firesheep, so one may find that Blacksheep has distributed such “device” with the object of promoting its use to infringe copyright, as shown by its clear expression to foster infringement. As such, Blacksheep could be contributorily liable for the conduct of its users.

Reply to Objection 1: One’s characterization of his own purpose does not ultimately determine whether that purpose is legal. Consider the law’s unwillingness to exhonerate a person accused of inflicting a black eye based on the defense that the assault was to study of the biological origins of bruising. But just below the surface here is the sentiment of the “unclean hands” doctrine. A court will not award relief to a party who comes to court with “unclean hands.” It may seem unfair for Firesheep to be so exploitative of others (privacy rights) and at the same time complain that others are being exploitative of its copyright rights.

Reply to Objection 2: The stated purpose of education or furtherance of the public interest, should not preclude Firesheep from claiming copyright in its code. Consider that no reasonable person will deny public television stations’ claim of copyright on their programming. One would infringe by posting NOVA to YouTube.

Plaintiff and defendant both sell wicker furniture on eBay. Defendant sent 63 notices to eBay complaining that plaintiffs auctions infringed on defendant’s purported copyright in the furniture.

So plaintiff filed a lawsuit over the barrage of DMCA takedown notices, claiming, among other things, that defendant violated 17 U.S.C. 512(f) by knowingly and materially misrepresenting that plaintiff’s eBay auctions contained infringing material. Plaintiff asked the court to grant a temporary restraining order (TRO), stopping defendant from sending the notices to eBay. The court granted the motion.

The court found that plaintiff would likely succeed on its Section 512(f) claim because of the strong inference that defendant knew it did not have a valid copyright claim. On this point, the court found that the defendant appeared to be claiming copyright protection in the industrial design of the wicker furniture. But the Copyright Act excludes “useful articles” from the scope of copyright protection.

The court also found plaintiff might suffer irreparable harm if defendant were permitted to keep sending the bogus DMCA takedown notices. If eBay were to suspend plaintiff’s account, plaintiff might lose prospective customers and goodwill. This sort of harm was intangible and not capable of measurement. Because of the risk of harm, the court also found that the balance of equities tipped in plaintiff’s favor.

Finally, the court found that the TRO would serve the public interest. On this point the court made the intriguing observation that eBay’s policies of taking down content upon the mere allegations of infringement reverses the ordinary burden of proof in copyright infringement matters. The court granted the TRO to prevent defendant from “effectively shut[ting] down a competitor’s business on eBay simply by filing the notice that the seller’s product allegedly infringes on the complaining party’s copyright.”

Yahoo and RealNetworks commenced a proceeding to determine the rate of a “blanket license” they would pay to ASCAP to perform musical works over the internet (e.g., through streaming services). (As an aside, such actions are brought in the U.S. District Court for the Southern District of New York pursuant to an antitrust consent order entered way back in the 1940’s.)

ASCAP wanted as big a piece of the pie as possible and argued that it should be paid royalties for songs that are downloaded. Remember, ASCAP only collects fees for the public performance (not the distribution or copying) of musical works. So it asked the court to find that each time a user downloads a file, that should be treated as a performance, and thus ASCAP should be entitled to payment.

The district court disagreed that a download is a performance as defined by the Copyright Act. ASCAP sought review with the Second Circuit. On appeal the court affirmed, agreeing that a download is not a performance.

The analysis is straightforward: The Copyright Act grants copyright owners the right, among other things, to perform the copyrighted work publicly. Under the Copyright Act, to “‘perform’ a work means to recite, render, play, dance, or act it, either directly or by means of any device or process.” Since a download plainly is neither a “dance” nor an “act,” the court had to determine whether a download of a musical work fell within the meaning of the terms “recite,” “render,” or “play.”

The court looked to dictionary definitions of the terms “recite,” “render” and “play” to observe that all three actions entail contemporaneous perceptibility. It found that music is neither recited, rendered, nor played when a recording (electronic or otherwise) is simply delivered to a potential listener.

In more detail, the court said that:

[music downloads] are simply transfers of electronic files containing digital copies from an on-line server to a local hard drive. The downloaded songs are not performed in any perceptible manner during the transfers; the user must take some further action to play the songs after they are downloaded. Because the electronic download itself involves no recitation, rendering, or playing of the musical work encoded in the digital transmission, we hold that such a download is not a performance of that work, as defined by [the Copyright Act].

Defendant was convicted under Ohio state criminal law for selling pirated DVD movies on a street corner. This apparently was the first ever prosecution under a law — a “record pirating statute” — enacted in 1976 (which was two years before the Copyright Act took effect). Defendant sought review of his conviction with the state appellate court. On appeal, the court reversed the conviction.

The court held that the state record pirating statute (R.C. 1333.52) was preempted by Section 301 of the Copyright Act (17 U.S.C. 301).

It was not clear which subsection of the record pirating statute defendant had been accused of violating. The statute provides:

No person shall purposely do either of the following: (1) Transcribe, without the consent of the owner, any sounds recorded on a phonograph record, disc, wire, tape, film, or other article on which sounds are recorded, with intent to sell or use for profit through public performance any product derived from the transcription. . . .

and

No person shall purposely manufacture, sell, or distribute for profit any phonograph record, tape, or album of phonographic records or tapes unless the record and the outside cover, box, or jacket of the record, tape, or album clearly and conspicuously discloses the name and street address of the manufacturer of the record, tape, or album, and the name of the performer or group whose performance is recorded. . . .

The Copyright Act expressly preempts certain state-law actions. Section 301 states that all legal or equitable rights that are equivalent to any of the exclusive rights conferred by the Copyright Act and that come within the subject matter of copyright . . . are governed exclusively by the Copyright Act.

In this case, there was no dispute that the movies were within the subject matter of federal copyright law. The more detailed analysis came in examining the question of whether the work was governed exclusively by the Copyright Act. That inquiry looks to see whether there is a qualitatively different “extra element” in the state law claim beyond what is required to show copyright infringement.

The court looked to two similar Ohio cases in which defendants had engaged in similar conduct. In State v. Perry, the Ohio supreme court found that the statute supporting the prosecution for “unauthorized use of property” by uploading and downloading computer software to an internet bulletin board service was preempted. In State v. Moning, the court held that a computer crime statute that prohibited the unauthorized access to data in a database was not preempted. The unauthorized access provided the extra element in that case.

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Evan Brown is an attorney in Chicago helping businesses and individuals identify and manage issues dealing with technology development, copyright, trademarks, domain names, software licensing, service agreements and other matters involving the internet and new media.

Evan is a partner in the law firm of Much Shelist, P.C. He is an adjunct professor of law at Chicago-Kent College of Law, and is a Domain Name Panelist with the World Intellectual Property Organization (WIPO).